Tech innovation s10_ip

ATOA Scientific Technologies Engineering Simulation For Innovation

Technology and Innovation Management: S10 Intellectual Property (IP) Strategy and management Raj C Thiagarajan, PhD

To

SIBM SIII MBA Students

ATOA Scientific Technologies Pvt Ltd | SIBM , III Semester MBA| Technology and Innovation Management

What is this map?

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a) Technology road map?

b) London tube railway roadmap to major offices?

c) Business partnership?


IP War

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Mobile phone patent suits


Why

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Exponential Growth

Worldwide shipment of mobile phones (2008)

Future

PC, 10%

Notebook, 10%

Mobile phone, 80%


IP Strategy and management

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• Intellectual Property

– Patents, Trade secret, copyright,…

• IP Strategy

– Inventor,

– Technology Manager

– Operations Manager

• Practical implementation

• Mobile phone example

• IP plays a critical role in Technology management


What is “Intellectual Property”?

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"Intellectual property" ("IP") is a term that includes

• Patents,

• Trade secrets,

• Trademarks and

• Copyrights.

• “Intellectual Property” is a product of the human mind or intellect in which the law recognizes a property right and protects against unauthorized use by others.


Why is IP Important?

• Competitive Edge

• Offend and Defend off Aggression from Competitors

• Higher Value Products

• Negotiation Leverage with Suppliers & Customers

• Deal Leverage for Acquisitions or Spinouts

• Stronger Market Position

• Better Access to Capital

• Prestige for Company

• Prestige for Employees

• Licensing

• Innovation perception

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Patent

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• A U.S. patent is an intellectual property right that is granted by the US government

– gives its owner the right to exclude others from making, using, selling the invention covered

by patent within US.

– expires 20 years from filing date


Patent

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• A U.S. patent is an intellectual property right that is granted by the US government

– gives its owner the right to exclude others from making, using, selling the invention covered

by patent within US.

– expires 20 years from filing date


The First mobile patent

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• Cooper is the first inventor named on "Radio telephone system" filed on October 17, 1973 with the US Patent Office and later issued as US Patent 3,906,166.

Image Source: http://en.wikipedia.org/wiki/History_of_mobile_phones

http://en.wikipedia.org/wiki/History_of_mobile_phones

http://en.wikipedia.org/wiki/History_of_mobile_phones


Anatomy

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Front page: – Title

– Filing Date vs. Issue Date

– Assignee= Owner

– Related Application Data

– Technology Class Codes

– Prior Art References Cited

– Abstract

– Front Page Illustration

Specification + Drawings • Set forth the precise invention for which a patent is solicited, in such

manner as to distinguish it from other inventions and from what is old

• Detailed written description typically corresponds to illustration(s) of invention and/or prior art through numerical annotations

Preferred and other embodiment • The best mode contemplated by the inventor for carrying out the invention

Claims • The specification concludes with distinct claims of the subject matter

which the applicant regards as the invention.

• Claim is an important part of the patent.

• This defines the scope of the legal protection.


Why are Patents important?

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• For the firm Inventions & patents provide a competitive advantage in the market place:

– making unique products.

– preventing competition from copying technology

– protecting Firm from law suits from others

– To get price premium

• For the inventors,

– Win win: Awards & Rewards

– Professional Recognition

– Career Growth


U.S. PATENT

NO. 7,842,379

Issued

Patentability

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Novel • To be patentable, an invention must be

new, i.e., different in some way from all prior art that is available to the public

• cannot be publicly known or used by others prior to the date of invention

• cannot have been patented or described in a printed publication anywhere in the world prior to the date of invention

• Nonobvious

• Useful

NOVEL

NONOBVIOUS

USEFUL

STATUTORY SUBJECT MATTER


What is Patentable?

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• Processes, including new use of known process

– Polymer Processing , food processing.

• Articles of manufacture

– Iphone,

• Machines, Software, Algorithms, etc.

– Engines, Networking software, analysis algorithm

• Compositions of matter

– Metal, glass, Polymer, Alloy, Semiconductors

• Improvements of inventions in any of the above classes

– How to make substantially better, faster, cheaper.


What is a Copyright? • A way of protecting the expression of an idea

• It does not protect the idea itself.

• It goes to how you express it--the form of the expression

• Software code and technical support documentation are copyrightable

• Freeware, check and use.

• Creative Commons licenses provide simple, standardized alternatives to the “all rights reserved” paradigm of traditional copyright.

©

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What is a Trade Secret?

• Proprietary information which is business critical and commercially valuable and kept secret

• If not kept secret, it becomes publicly available

• Selection of trade secret vs Patent is a critical strategic choice.

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Trade Secret vs. Patent

Patent Criterion Trade Secret

Between 5 and 20 years Innovation Life < 5 years or > 20 years

Easy Ability to Reverse Engineer/

Copy

Difficult

No protections to protect secret

status of innovation

Protection mechanisms in Place Protected from inadvertent or

intentional divulgation

Patentable Subject Matter Non-patentable

Shared with task environment Sharing of Innovation details Within Firm only

Core Technology Nature of Innovation Incremental Improvement

Highly Likely Licensing Potential Unlikely

Customer or Public Innovation Use Internal Firm

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Strategic IP

Market

• Strategy

• Product

• Customer

• Competition

Technology

• Engineering

• Landscape

• Prior art

• Associations

Strategic IP Offensive / Defensive

Publications Patents

Copyright Trade Secrets

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Strategic IP

“Technology Push ”

• Create ideas

• Do experimental demonstration

• Disclosure

• Evaluation for Priority

• Patent application Filing

• Patent portfolio management

• Technology Ideas.

“Market Pull”

• Develop business strategy

• Define target product, market, segment

• IP–assessment

• Identify strategic idea area

• Targeted idea generation

• Marketable Ideas

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IP Strategy

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Competitive IP Landscape, Strategic Patent Portfolio

Intellectual Property

Offensive Defensive

Strategic

Patent

Filing

Business development

and Collaborations

Patent Infringement

avoidance

Establish prior art, Freedom to

Practice

IP team


IP Direction Concepts,

Disclosures Filings,

Publications

IP strategy process

“Patent” search Systems Online Micropatent Delphion …

Idea, Invention management System

Patenting filing prioritization system

External Publications, Systems IP.Com

Business Strategy / Market Assessment

Competitive IP landscape Analysis (Gap analysis)

Competitive Intelligence

Technology and Competitive Intelligence

IP Strategies

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IP Landscape

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Technology

Patents

Licenses Publications

Competitor Patents

Licensing

Operations Leader

Patents

Cross Licenses

Trade Secret

Competition

©


Competitor Y

OI

OI – Outside - IN

Typical IP landscape

Firm Patent Footprint

Growth Space

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Competitive landscaping

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Operations Leader

Research

Patent Publish

Trade secret


1: Research : First step to build your landscape • What patents do we have in this strategic growth area?

• What is the license status?

• Is there any research agreements/ obligations?

• What was published in this area?

• What are competitive patents, interests?

• What is the status of prior art ?

– Patent position

– Freedom to Practice?

– Licensing Strategy

– Gap analysis and opportunity identification

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2: Evaluate Patent Position

• Can this IP provide competitive edge to the Firm?

• Is the invention Novel? Useful? Non-obvious?

• Is Licensing, Business patent partnership is possible?

• Technical Merit Evaluation :

– Breakthrough, Substantial or incremental

– Technical Feasibility

• Evaluate Business or market metrics:

– Impact of the idea for customer experience / value creation.

– Use for the Firm competitive edge

– Potential Use by Competitor

• How does Patent play into the business strategy?

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3: Strategic IP Decision Flow

IDEA

Is the idea Can be used as defensive / offensive patent?

Publish

Novel, Nonobvious, useful and IP Value

to the firm?

Commercial Value to the Firm?

Hold

Patent File

Trade Secret

No

Yes

Yes

Yes

No

No

May be

May be

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3a. Patenting Fishbone

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Patenting Success

Conceptual

Financial

Competitive

Administrative

Procedural

Temporal

Novel

Useful

Non-obvious

Freedom to Operate

Defensive disclosure

Not Trade Secret

Invention date established

Prior art researched

IP strategy documented

Top Management support

Business Management support

FILE submission

Maintenance fees & Foreign filing

Precede prior art

Invention date established


Knowledge Centre budget Patent Attorney time

Competitive Edge


3b. Publishing Fishbone

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Publishing Success

Conceptual

Financial

Venue

Quality

Patent / Trade Secret

Temporal

Proper Category

Prestige of Journal / Conference

Accepted / Invited

Patenting should Not alienate community


Internal Documents

Internal vs. External

Peer validation

Referenceable

Foster external relationships

Publicity improves reputation

Learn from Community

Expired value as trade secret

Public disclosure after patent consideration

Investment in recognition

Free defensive disclosure

Anonymous option with IP.com

Review-to-publish Cycle time

IP Strategy: Establish / maintain technical

reputation & Freedom to Practice


Step 4: IP Maintenance

• Ongoing Maintenance

• Monitor new (internal, external) developments in patents and publications

• Establish detectable features of infringement

• Monitor infringement

• Monitor (Firm and Competitor) acquisitions w/ IP implications

• Monitor new Firm Licensing arrangements

• Revisit disclosures in “Hold” / Trade Secret status

• IP Annotation / Strategy

• Conception / Definition:

• Problem Solution

• Context & Strategy for Idea

• IP Interdependencies

• If/When Patent is Granted

• Competitive / Product Line Action Plan

• If/When Patent is NOT Granted

• Implications / Contingency Plan

• Highlight public disclosure / product use concerns

• Document information on inventors, prior art annotations

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Managers Role

• Strategic IP direction

• Project Manager

– Patent Procurement Obtaining and protecting patents

– Avoiding Infringement

– Assuring that solutions can be used without infringing on the rights of others

– Global implication

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Tips for Inventors

• Search : Do not reinvent the wheel!

• Look for Gaps in “Prior Art” which needs to be plugged

• Document the work / Notebook records (US Patent : first to invent)

• Be aware of the type of claims being made (Prod. / Process / Appl.)

• Decide Inventorship

• As complete a PDL as possible / 2-way commun. with attorneys!!

• File or Publish or Park.

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IP MANAGEMENT

• Scope of Patents

• Identify gaps in existing patents

• IP Infringements (By others)

– Identify special properties of the product/process

– Identify competitors network

• Acquire companies that have related IP. Buy IP.

• Patent Update (or) New IP Disclosures

• Cross – Licensing

• Don’t maintain IP, if no sufficient ROI

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Patents & Litigation Defenses

• Broad patent claims cover more possible implementations of a new invention (including those never envisioned at the time of the original invention), thereby maximizing chances of 3rd party infringement

• However, the broader an asserted patent’s claims, the more susceptible it becomes to invalidity challenges

• The Specifications of prior art patents (including published applications) are the most significant for assessing the validity of an asserted patent claim

• Can indicate whether an invention lacks novelty, or is “anticipated”

• Can indicate (either alone or in combination with other prior art) whether an invention is “obvious”

• Operative Question: Have key features of invention as claimed already been taught by prior art patent(s)?

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Example

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• Enercon vs Enercon India

• US patent US6899523.

The changing /pitching/twisting of wind blade from root to tip to change the afflux angle is known in the art.

Book published in 1995 that shows that blades are twisted from root to tip to avoid stall and maximise the lift.


The Rise of Smart Phones

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• Popular and Growing exponentially

• ~ 96% growth in the last 12 months

• ~ 320 million phone a year

• Changed the way we live

• Future of possibility


Patent war

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• Focus on who has competitive edge?

• Who will win the war?

• Benefit to the customers?


Smart phone patent trend

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• ~7100 patents

• The patents had publication dates starting from 1965, and grew steadily from 77 patents filed in 1990 to 565 patents filed in 2010

Soruce: Mike Lloyd et.al, The Smartphone Patent Wars, Ambercite, Griffith Hack, March 2011


Patent ownership

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Patent Search

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• Associative searching


landscape

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• efsdf

Disputed smartphone technologies – patent landscape analysis. Visualisation of the most disputed technology areas


Disputed smartphone technologies

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Touch screen landscape and Ownership

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Touch screen competitive landscape

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Highest ranked patents in the touch screen technology cluster.

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• To stay competitive, Apple’s competitors (much more than Apple itself) are heavily dependent on suppliers and licensing agreements for one or more components


Link between Motorola & Apple patents

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ATOA Scientific Technologies Pvt Ltd | SIBM , III Semester MBA| Technology and Innovation Management 47

• who has competitive edge?

• Who will win the war?

• Benefit to the customers?

• Is it Google Android, Apple I phone or ?


A Review of the Major Points

• A patent is an intellectual property right assigned to an inventor/ assignee.

• A copyright protects the expression of an idea, but not the idea itself.

• A trade secret which is not kept secret becomes publicly available.

• The two critical components of IP strategy are related to technology and business.

• Strategic IP can provide a competitive edge for the firm.

• Competitive landscaping is one of the method used for strategic IP.

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ATOA Scientific Technologies Pvt Ltd | SIBM , III Semester MBA| Technology and Innovation Management 49

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